Status of USPTO’s Withdrawn Abstract Idea Patents

by Dennis Crouch

In the Summer of 2014, the U.S. Supreme Court decided the seminal case of Alice Corp v. CLS Bank that pushed further against the patenting of abstract ideas or their non-inventive applications. As part of its implementation procedures, the USPTO quickly began examining applications under the new standards and – as an immediate response – withdrew the allowance of a number of applications that had been determined to be patentable prior to the Alice decision.  Through a FOIA request, Charles Duan and Tristan Gray-Le Coz of Public Knowledge were able to obtain a list of those several hundred withdrawn applications and reported their results on Patently-O in November 2014.

I wanted to follow up on those applications to how they have fared in the seven months since the USPTO’s July 2014 action. These cases are interesting because they were ready for issuance and the only extra issue is eligibility under Section 101.  Thus, this setup offers a nice natural experiment to consider cases where Section 101 is of direct importance.

Using PAIR, I pulled up pendency information for each of these applications and the chart below shows the results:

PendingAliceAppsBasically, 93% of the applications are still pending. Most of these have been initially rejected under Section 101 and now are on to a second-round final. 7% though are either patented or have received a notice of allowance. Only 1% of the applications have been abandoned.  Because these applicants had – at one point – a genuine expectation of issuance that may be hard eliminate.

Of these issued patents, I think that the response filed in Application No. 13/076,216 is interesting. In that case, the applicant essentially argued that the USPTO had failed to provide evidence that the idea of data collection and analysis was an abstract idea and failed to provide evidence that the computer-implemented limitations failed to provide sufficient practical grounding in order to avoid the eligibility ax. The ‘216 application has matured into U.S. Patent No. 8,965,784.

Over the next year, we should begin to get a good picture of how the USPTO will be working with the framework laid out by the courts.

107 thoughts on “Status of USPTO’s Withdrawn Abstract Idea Patents

  1. 18

    Patent law is patently absurd! Ideas should be patentable.
    What else is the modern economy based on than mere ideas?

    There is a campaign now on Indiegogo that is attempting to gain support in the crowdfunding community to allow “Idea Patents”.

    If government will not do the right thing, We the People should!

    link to indiegogo.com

  2. 17

    “Supreme Court decided the seminal case of Alice Corp v. CLS Bank”

    You know, Dennis, it occurs to me that if you did not also similarly refer to the Monsanto case as “seminal”, you really missed an opportunity.

  3. 16

    The PTAB made a comment about evidence in PNC Bank v. Secure Axcess:

    “We also find that Petitioner does not provide sufficient persuasive evidentiary support that the placing of a trusted stamp or seal on a document is “a fundamental economic practice” or a “building block of the modern economy.” See Alice, 134 S. Ct. at 2356 (citing various references concerning the concept of intermediated settlement, including an 1896 reference).”

    1. 16.3

      [We need] evidentiary support that the placing of a trusted stamp or seal on a document is “a fundamental economic practice”

      Translation: “Please change our diapers while we continue to enable the lowest form of innovation. It’s super fun to be born yesterday and play patty cake with grifters and scam artists! Everybody should try it!”

  4. 15

    Off topic, but was wondering: the dialogue surrounding NPEs, patent “quality”, and patent reform generally has made abundant use of the term/concept “innovation” instead of “invention”.

    Of course, one could conclude that when engaging in a war of words/PR/spin sometimes a side will purposefully inject and prop up an anti-concept or an ill-defined one while avoiding a valid concept… in order to mislead and/or muddy the waters.

    For now let us assume this did NOT happen. What then is the valid concept “innovation” as distinct from “invention”?

    Clearly from the dialogue, it is implied that innovation includes invention but includes other things in addition to invention. Also innovation could not reasonably mean “production” or manufacture or delivery of good and services, since technically speaking these are the result of innovation or the means by which innovation is provided to consumers – its what the “dialogue” is claiming results FROM innovation, and cannot be innovation itself.

    What then are those other things included in the concept “innovation” which are both non-inventive creations, and are clearly not within the realm of production of goods and services? And why would they care about these things, these intellectual (and possibly conceptual) orphans?

    Does it include intangible or intellectual products of the mind which are not or cannot be the subject of property rights? Does it include unpatentable ideas? Useful “abstractions”? Things which magically make one’s computer do stuff but which fail the Alice test?

    If so what’s the fuss? These lost ones afterall, as unpatentable “innovations” are not protectable and from their arguments should not be… so does not that mean they do not value them at all … and if so why do they bother to use the term innovation at all if the only important species is “invention”? Clearly, anti-software advocates want to orphan large swaths of software inventions and the like under Alice (wrongly or rightly) so why do they use an inclusive term such as “innovation” to label that which they clearly do not believe is important enough to protect?

    So what IS the point using the term “innovation”? What possibly could be the end game? Confused.

    1. 15.1

      ^^^ a long and more steadfastly detailed version of the question I put directly to Malcolm long long long ago (and one he has NEVER directly – and honestly – answered).

      “You want the truth?” (said in the best Col. Nathan R. Jessup tones)

    2. 15.2

      Of course, one could conclude that when engaging in a war of words/PR/spin sometimes a side will purposefully inject and prop up an anti-concept or an ill-defined one while avoiding a valid concept… in order to mislead and/or muddy the waters.

      Of course, one could conclude that sometimes people are just too paranoid/or ignorant to follow a discussion without getting hung up on pedantic balloney.

      Grow up already.

      anti-software advocates want to orphan large swaths of software inventions

      He found a nut! Wow. Super impressive.

      1. 15.2.1

        ^^^ mindless empty prattle

        As usual – “Wow. Super impressive

        Maybe next time Malcolm you might actually try contributing to the dialogue in a meaningful way.

    3. 15.3

      Some people claim that innovation means actually making and selling things that are relatively new. But the fact that the newness is in question because some unfunded startup had the same idea and disclosed it in a patent before the “innovator” does not prevent the so-called innovator from claiming that status. Nor does the fact that the making is not done by the “innovator” but by a factory in the third world.

      1. 15.3.1

        Some people claim that innovation means actually making and selling things that are relatively new.

        Please identify one person who made this claim.

  5. 14

    Your 101 arguments against this one? This is claim 1 of 8,818,677.

    “1. A vehicle speed control system which is installed in a vehicle which has a vehicle speed detector, comprising: a controller that performs vehicle speed limit control that limits a vehicle speed so that the vehicle speed detected by the vehicle speed detector does not exceed a speed limit, and speed increase rate control that allows increase of the speed of the vehicle after the vehicle speed limit control is finished while limiting a rate of increase of the speed of the vehicle so that the rate of increase of the vehicle speed does not exceed a target rate of increase of the vehicle speed, wherein the controller sets the target rate of increase of the vehicle speed based on the vehicle speed detected by the vehicle speed detector, so that the target rate of increase of the vehicle speed after the vehicle speed limit control is finished is larger when the vehicle speed is high during the vehicle speed limit control compared to when the vehicle speed is low during the vehicle speed limit control. ”

    I’m not even sure how this was rejected under Alice.

    This points out a problem with getting rid of all “software” patents. This is basically a “software” patent, as the controller is programmed via “software” (which could be firmware). If you get rid of all “software” patents, you get rid of patents like this.

    1. 14.1

      I’m not even sure how this was rejected under Alice

      PatentBob,

      Respectfully, you need to pay better attention.

      With the (unlimited) “Gist/Abstract” sword, the mere fact that the claim itself – as a whole – IS a machine or a manufacture, or any other statutory category does not protect the claim from being invalidated when brought in front of the court.

      This power remains undefined.

      How can you honestly say that you are unsure of how this happens? With full due respect, have you been living under a rock?

    2. 14.2

      most of the allowed applications appear to be totally false positives. What happened then was that after the case was withdrawn it was sent back to the examiner who determined that it met the requirements of 101. As a consequence of these applications were never actually rejected for lacking eligible subject matter.

      1. 14.2.1

        I think I am missing a detail when I read the post, then.

        Doesn’t “Basically, 93% of the applications are still pending. Most of these have been initially rejected under Section 101 and now are on to a second-round final” mean that the vast majority were rejected under 101, and remain rejected under 101?

          1. 14.2.1.1.1

            In other words, removing the false positives, nearly every single application is being pursued (greater than 99%)…

            The type of pursuit would be an interesting tale.

    3. 14.3

      Wait until MM gets a load of the USPTO’s Streamlined Eligibility Analysis.

      His head may very well explode.

      That Analysis, when taken to its logical conclusion and if applied properly by Examiners, should get all claims that recite some non-general purpose computing device elements over the 101 hurdle.

      Interesting to note that, to my knowledge at least, all claims invalidated under Alice have been general purpose computing device claims. Nothing like the claim above has been invalidated.

      1. 14.3.1

        Interesting to note that, to my knowledge at least, all claims invalidated under Alice have been general purpose computing device claims. Nothing like the claim above has been invalidated.

        For eligibility purposes, there is is zero meaningful distinction to be drawn between a “general purpose computer” that is “configured to” receive/store/process information, a “general purpose processor” that is “configured to” receive/store/process information, and a “general purpose controller” that is “configured to” receive/store/process information.

        That’s because “computers” and “processors” and “controllers” are old. When all that’s new is the new “functionality”, what is being protected is the new functionality.

        New functionalities are not eligibile subject matter.

        The bottom line here is that plenty of claims “like the claim above” have been rendered ineligible. Managing the speed of a car “on a controller” or managing a bingo game “on a computer” or managing “access” to a database of awesome medical therapies “on a processor”. Same difference. It’s functionally claimed junk, from top to bottom.

        Get it out of the system. It’s already off the rails. Does the train need to come to a rest upside down on the bottom of the ocean before we fix this mess?

            1. 14.3.1.1.1.2

              My Diehr Ned, why do you ask a question that you know the answer to?

              Is this too cryptic for you? (as another example)

              Maybe your heart beat picture is a little more clear if you realize that cheerleading Malcolm here is simply preposterous.

    4. 14.4

      Looking at the file wrapper, this one was withdrawn by the applicant for consideration of an IDS with some foreign references. It was not withdrawn as a result of Alice (those apps get a PTOL-67 in the file wrapper).

    5. 14.5

      Not sure why getting rid of patents like these is a “problem.”

      The claim doesn’t appear to contribute any new technology. Its just a new algorithm applied to old machines.

      1. 14.5.1

        go,

        Now you are being disingenuous – “old box,” inherency, and new capability added by changing the machine with the configuration of a new component, a manufacture defined as software (shall I remind you of your own admission re Benson…?)

        Please stop the mindless cheerleading.

        1. 14.5.1.1

          Anon,

          I’ve never really bought into the whole “old box” argument you’ve had with others. To me, the point is entirely irrelevant to whether the claim encompasses an abstract idea. A sort of patent Ship of Theseus.

          Bottom line, if the only difference between your claim and the prior art is the recitation of an abstract idea-like the algorithm in the claim presented-your claim is ineligible.

          Even if it is a ‘new box’ or whatever.

          1. 14.5.1.1.2

            I never really bought into

            Now that is something entirely irrelevant. Your “buying into” does not change the reality of it. All it does is speak to your remaining purposefully ignorant. Is that what you are going to hang your hat on?

            Further, you mix up prior art delta and eligibility – conflating the discussion of 101. Further too, it appears that you have sipped the koolaid of Malcolm’s b@nal pet theory, not realizing that claims merely aggregated (no integration) do NOT have to even have ANY mental step elements in order to fail patentability – you are “hanging your hat” on a b@nal reduction that does not even address the larger issue at focus.

            It would help the conversation if you cared enough to come up to speed on a minimal level before you did your little cheerleading routine.

            1. 14.5.1.1.2.1

              Anon,

              Back to your oldbox analogy. Let’s assume for a moment that you’re factually correct that new software makes a new computer.

              That ‘fact’ just doesn’t have the legal implications you wish it did. If it did, the claims in alice would have been eligible. After all, they recite a new function for a computer and therefore a new machine.

              We know that didn’t happen.

              I’m not sure what you mean by ‘conflating’ prior art and eligibility. The Supreme Court always analyzes the prior art when analyzing eligibility. Why wouldn’t they?

              Also, I agree that mere aggregations are ineligible-for any number of possible reasons, one of which might be that they relate to abstract ideas.

              1. 14.5.1.1.2.1.1

                we know that didn’t happen

                Well except for the fact that it did, you are almost paying some attention.

                As I pointed out long long long ago, the fact that new machine WAS created was stipulated by both parties and was NOT an issue that the Court was addressing (I explained prior to the Court’s decision exactly how In re Alappat could not be affected by the Holding of the Alice decision due to the fact that it was not an issue before the Court).

                You really need to stop cheerleading on things that you are so absolutely clueless about.

                1. Anon,

                  Sorry for the misunderstanding. My “that” in “we know that didn’t happen” is the claims being found eligible despite the ‘new’ machine.

          2. 14.5.1.1.3

            If you want to say it is not patentable because it is not new or is obvious and therefore does not meet the requirements of section 102 or 103, go for it.

            Quit mucking up section 101 with considerations of what is new and what is old.

            1. 14.5.1.1.3.1

              It seems that by “mucking up” 101, you really mean “using 101 to invalidate a claim.”

              Analysis of the prior art has been part of 101 for a long time. Read Mayo again.

                1. Mayo provides a nice overview of some 101 case law.

                  Not trying to be rude, but it appears you need a refresher.

                  If Mayo doesn’t do it for you, how about Flook at pgs 594 and 595.

            2. 14.5.1.1.3.2

              Silicone, what if a claim includes both ineligible (information) and eligible subject matter (a computer and a timer, both generically claimed). The you, the applicant, contend that invention is in the eligible – the machine, the computer and the timer, and not in the information. The PTO finally rejects the claims under 102/103, proving the only novel subject matter in the claim is the ineligible information, and that such information is not modifying any eligible subject matter in way. You appeal and lose through the Federal Circuit.

              Now, you are on appeal to the Supreme Court. Pretend you are arguing to the nine justices. Tell us why you should get a patent under these circumstances.

              1. 14.5.1.1.3.2.1

                Nice strawman and not-so-hidden deception Ned.

                You have “set the stage” with a claim that fails the gen er al rule against aggregated claims.

                There is no need even to explore the “eligible/non-eligible” split as that split is simply NOT meaningful to the fail of the set-up.

                To wit: a claim TOTALLY comprised of eligible subject matter – such as a bicycle, a tuna sandwich, a goldfish in a light blue bowl and a new-and-improved frapmatitz fails your set-up based solely on the condition of “not modifying“.

                Short hand view – you purposefully hid a non-integration aspect into the hypo, and will dissemble and attempt to claim that the problem is your pet “eligible/ineligible” split and the canard of PON.

                Your games are old and stale Ned.

                1. Claim 1. Business method.
                  Claim 2. Business method implemented using a GP digital computer and a timer.

                  We know your position, anon. Both are eligible.

                  However, Bilksi nixed 1. Alice nixed 2.

                  But if one contends the combination of a GP digital computer and a time is new or non obvious, how does this or should this change the result?

                2. Ned,

                  You have zero credibility when you mistate the law as badly as you do here, redefining “business methods” so as to have them “mixed.”

                  Remember, 3, the new 4, is still not 5.

                  Try not to kick up such dust when I nail you for dissembling on the non-integration and canard of PON deception you attempt to foist.

                3. Anon,

                  You’re obviously correct that the SCOTUS hasn’t explicitly said business methods are ineligible.

                  That said, would you care to provide an example of a business method claim you think would be found eligible by either the Fed. Cir. or the SCOTUS?

                4. Anon, I do not misstate the law. I rely on Hotel Security, Mayo and Alice. Also, I rely on the current Federal Circuit law regarding printed matter that everyone agrees is not eligible if not applied, which leaves only its information content.

              2. 14.5.1.1.3.2.2

                If the so-called ineligible stuff is old, then you get invalidated on the ground of obviousness.

                If it is new and non-functional (i.e. the information is a musical recording), then you again lose on an analogy to artwork on paper not having non-obviousness.

                If it is new and functional (i.e. not “a fundamental economic practice long prevalent in our system of commerce.”) you have a valid patent. Of course the amateurs at Scotus (and a few hacks for the knock-off artists) might disagree, but what the heck, we have do deal with their backwash on a daily basis.

    6. 14.6

      PatentBoB: If you get rid of all “software” patents, you get rid of patents like this.

      Great, because that’s a pile of functionally claimed junk that doesn’t belong in the patent system.

      “software” (which could be firmware)

      Yes, firmware is software. I’ve no idea why you believe that matters.

      1. 14.6.1

        How about interval windshield wipers? You can use a computer to do that, or an old school analog timer, I remember when I was a kid there was a lot of talk about the patent on the idea. Should that be a patent eligible improvement? That’s a hard case IMO. Id say yes, because the output of the method is a physical change in the movement of the wipers.

    7. 14.7

      Regarding the claim, number 1 of the ‘677 patent, we have conventional apparatus that gathers data and then a calculation.

      How how does this comply with Mayo – or for that matter, Flook?

    8. 14.8

      “I’m not even sure how this was rejected under Alice. ”

      Under Alice the claim is directed to the abstract idea of driving under the speed limit and under an acceleration limit –done by a computer.

  6. 13

    I just finished responding to a 101 rejection in which the examiner presented the MOT test as being the definitive test for patentability and cited the PTO’s “Love” memorandum from 2008 on 101 examination guidance. It’s worrisome that the examiner is oblivious to Alice and the corresponding 2014 guidelines, but I guess that’s better than the examiners that apply Alice by saying that your claim is directed to an abstract idea, which they then denominate as being the entirety of the claim, including every hoary detail.

      1. 13.1.1

        Yes, especially since this is an ex parte proceeding, with a non-attorney patent examiner, in which one has a duty of candor.

        1. 13.1.1.1

          Paul,

          How is duty of candor related to ethics and the examiner’s mistaken application of law and the examiner not being an attorney?

  7. 12

    Hmmm.. maybe Congress should set up a committee to recommend ways to come up with clear and objective ways to deal with this… like they did in 1946.

    1. 12.2

      Comments as to the existence of “Fight Club” will be deleted.

      The irony of “SAWS” notwithstanding.

  8. 11

    I utilize a keychain on the cloud. Who else does? Are we all infringing this patent?Apple made us infringe!

  9. 10

    the exchange computer applying a quantitative analysis algorithm with the customer identification data, the quantitative analysis algorithm determining whether the exchange computer has received an amount of customer identification data sufficient for the customer to be uniquely identified; … the linking service computer applying a qualitative analysis algorithm with the customer identification data; the qualitative analysis algorithm determining if the customer identification data is sufficient for the customer to be uniquely identified by matching the customer identification data to a plurality of customer identification records;

    “Customer data” is really special data. It’s totally different from other data! Computers have a really hard time determining if it’s “sufficient”. Hence the deep need for this awesome solution for determining whether “customer data” is sufficient. Using a computer.

    Round and round we go. What an incredible joke.

  10. 9

    DC Over the next year, we should begin to get a good picture of how the USPTO will be working to ignore the framework laid out by the courts.

    Fixed.

  11. 8

    I am currently dealing with a case that’s in appeal, where the examiner’s position on one of the issues is that the style of the claim is “against office policy.” Full stop. No authority cited whatsoever.

    There is a clear problem with an examining corps where any examiner holding a rank higher than “trainee” thinks that this is a legitimate form of examination.

    So I am eager to see applicants start pushing back against this free-form, unlimited-discretion form of examination, and begin demanding supporting evidence for wholly conclusory statements.

  12. 7

    the exchange computer applying a quantitative analysis algorithm with the customer identification data, the quantitative analysis algorithm determining whether the exchange computer has received an amount of customer identification data sufficient for the customer to be uniquely identified; … the linking service computer applying a qualitative analysis algorithm with the customer identification data; the qualitative analysis algorithm determining if the customer identification data is sufficient for the customer to be uniquely identified by matching the customer identification data to a plurality of customer identification records;

    Ah it’s our good friend functional claiming to hide overbroad, non-disclosed algorithms. Definitely ineligible and overbroad. Some people will never learn.

    If you’d have disclosed your algorithm, I’m sure even the poorly educated examiner could figure out “match social security number” or “match name string” was neither novel nor non-obvious.

    1. 7.1

      >>Ah it’s our good friend functional claiming to hide overbroad, non-disclosed algorithms. Definitely ineligible and overbroad. Some people will never learn.

      All claiming is functional. Please take into consideration the people of ordinary skill in the art and how they would interpret the claim.

      1. 7.1.1

        All claiming is functional. Please take into consideration the people of ordinary skill in the art and how they would interpret the claim.

        No, there’s a claim to a concrete structure or step, and then there are claims to “any way of achieving this” which is neither a concrete structure nor a concrete step and thus becomes a claim on the abstract concept.

        You can describe the Apollo spacecraft, or you can say “a ship that travels through space.” The former preempts a single thing the creators actually possessed (and thus leads to a proper scope), the latter reads on a concept that encompasses the USS Enterprise, which nobody possesses. Use of the latter is an attempt to monetize someone else’s invention.

        When someone actually does invent the Enterprise, the thing that allows them to practice it should be that they were the first to create it, not that a prior functional claim that covered “all spaceships” has ran its term. Especially because most use of functional language (software) is an incredibly fast moving tech where the patent term stretches through many generations.

        1. 7.1.1.1

          Sidenote: It really should not be that difficult to distinguish claims that say HOW something is done rather than simply talking about WHAT is achieved. The statement that “all claiming is functional” ought to be ridiculous, but it’s entirely possible you work in an area where you have never actually seen a valid claim.

          1. 7.1.1.1.1

            The statement that “all claiming is functional” ought to be ridiculous,

            It is ridiculous.

            But it’s the kind of self-serving easily disproven inanity we’ve gotten used to around here whenever these junk claims are analyzed.

            Push a little further and you’ll hear about how “nobody” claims the molecular structure of their new compositions. But these people are really serious! We must pay attention to their deep thoughts.

          2. 7.1.1.1.2

            Random, you have no idea what you are talking about. What are you an examiner? Sounds like it.

            I have worked for most of the top tech companies in the world and in many other areas as well including mechanical and biomedical.

            >>No, there’s a claim to a concrete structure or step, and then there are claims to “any way of achieving this”

            This is the latest judicial activist fiction. This is not true Random. The claims have to be interpreted by a person of ordinary skill. If the claim sounds functional to you, then it includes the known solutions to the problem.

            That is how patent law works. I realize that know we have a stacked Fed. Cir. with Google judges that have no science or patent background that will swill any nonsense to please their masters. But, that doesn’t change reality.

            Please tell us a claim that is “purely functional.” You know what? The only claim that is purely functional: do you know what it is? I bet you don’t because you are very ign0rant person.

            Here, I will tell you. The only purely functional claim is to one where there is no solution to a person of ordinary skill in the art. That is the only purely functional claim. So, for example, an apparatus configured to transport people from a spaceship to the surface of the earth in a particle beam wherein the person is exactly reconstructed on the surface of the earth.

            That is a functional claim because there is no known solution. Any other claim is not functional. That is reality.

            Where has intellectually honesty gone? When I was young people like you Random were considered low life that would likely commit felonies and hurt people because you have no integrity. You don’t care what the truth is and only what will get you what you want. I don’t get what has happened to people, but it isn’t purely functional. Your brain is warped. You are no longer capable of thinking clearly.

            1. 7.1.1.1.2.1

              This is the latest judicial activist fiction. This is not true Random. The claims have to be interpreted by a person of ordinary skill. If the claim sounds functional to you, then it includes the known solutions to the problem.

              Here’s what happens:
              1) Applicant argues limitation X, which (is functional, but to use a term you’d understand) only limits the invention by what it achieves rather than by the means it achieves it, is novel and non-obvious, because nobody has ever solved the problem before

              2) Applicant refuses to limit his claim to his solution

              3) Patent issues, Patentee sues anyone else also solving the problem

              4) Patentee argues (correctly) that he is not constrained to the particular embodiments of the spec

              5) Bad attorneys fail to see that one cannot be the first to solve a problem yet claim every solution, as has been the logic since Morse

              If the claim sounds functional to you, then it includes the known solutions to the problem.

              No, a functional scope by definition includes both known and UNKNOWN solutions to the problem. That’s what makes it invalid. Take this claim above – Claim 1 issued, despite it only having two limitations which could possibly provide patentability: a qualitative algorithm and a quantitative algorithm. Does he limit those algorithms to the algorithms he posits? No. He wants the algorithm he posited, and any other algorithm which also achieves a result.

              Please tell us a claim that is “purely functional.”

              The invalidity doesn’t only come in when a claim is purely functional, the invalidity comes in when a limitation is purely functional, as that often provides the overbreadth that causes invalidity. There are many examples of this – Morse, Perkin’s Glue, GE v Wabash, Halliburton, and some of the recent 101 cases. The algorithms in this case are purely functional – they are limited only by their end result rather than by how you got there. The only way they could be valid is if they were construed to be in 112, 6th, and they aren’t, there’s an entire passage in Aristocrat about how this is purely functional claiming.

              The only purely functional claim is to one where there is no solution to a person of ordinary skill in the art.

              No, it’s not. Show me one case that says that a claim to an end result has a restriction imported into the claim that it is limited to only ways known at the time of filing. I’ll give you a very simple example to counter it: If I invent the first machine that “prints at a distance” the claim does not get saved because its limited only to my known telegraph. The claim is struck down as invalid because reads upon any number of unknown future products (like a fax machine, a cell phone sending a text, or the networked computer). This is a basic misunderstanding you have of the law.

              When I was young people like you Random were considered low life that would likely commit felonies and hurt people because you have no integrity.

              I thought people this bad at their job failed out of school, not got paid by large corporations. Clearly I’m in the wrong side of this work.

              Read Morse, Wabash, Perkin’s Glue, Halliburton. Seriously, read them, because the courts don’t import limitations to “only known means of achievement” to save functional claims.

      2. 7.1.2

        “Please take into consideration the people of ordinary skill in the art and how they would interpret the claim.” I agree

        1. 7.1.2.1

          “Please take into consideration the people of ordinary skill in the art and how they would interpret the claim.” I agree

          Yes, lets.

          the quantitative analysis algorithm determining whether the exchange computer has received an amount of customer identification data sufficient for the customer to be uniquely identified

          Tell me what steps the computer takes to determine whether the data submitted is sufficient. I’ll give you a hint, there’s an entire section entitled “Quantitative Analysis.” Read that section and tell me what steps his algorithm takes, and ask if he is claiming his algorithm or all algorithms.

            1. 7.1.2.1.1.1

              You don’t need to be, because it doesn’t elect a method of doing it. That’s specifically the point. He knows that if he only claimed his method of doing what he repeatedly points out is novel and non-obvious, what he is doing is so easy that it would be easily designed around.

              1. 7.1.2.1.1.1.1

                and non-obvious, what he is doing is so easy that it would be easily designed around.

                You appear to think this a feature of your position while it is actually a bug.

                Related to your lack of understanding of the proper role of the ladders of abstraction and your implicit desire to have claims written at the code-level (nowhere such being an actual requirement), I do believe that once you open your eyes to your limited understanding, you will readily recognize the fallacy of your position.

          1. 7.1.2.1.2

            >>ask if he is claiming his algorithm or all algorithms.

            Do you understand that if someone comes up with a solution that inventive that is inside the claim scope that the claims can be invalidated on this basis? That is the challenge with claim scope.

            He is entitled to a claim scope that is the extent of enablement (to a person of ordinary skill in the art in light of the specification). See LazardTech.

            I just cannot believe that such a foundation of patent law would be questioned by the likes of you. I can only attribute this to Lemley and his map for judicial activism in his functional claiming “paper” that he got published in the vanity press.

            1. 7.1.2.1.2.1

              “He is entitled to a claim scope that is the extent of enablement (to a person of ordinary skill in the art in light of the specification). See LazardTech.”

              You keep saying that, but it’s just not true. You can’t claim more than you can demonstrate that you possessed at the time of filing.

              You need to re-read Lizard Tech.

              1. 7.1.2.1.2.1.1

                Directly at issue here is what does it mean as to “showing that you possessed” something – and what is the proper level of understanding of what the ladders of abstraction mean.

                Repeatedly Random Examiner has shown his lack of understanding on this concept by wanting a specific code-level showing (and claiming); being quite oblivious to the changes in law as written by Congress in 1952, which (in an “and yet it moves” manner) have been explained by Frederico, and subsequent case law (for example, see In re Orthokinetics).

                Also at point here is that the particular art field does have an impact – and that the actions of the Supreme Court itself has had an expansive (even if unforeseen) impact by super-empowering PHOSITA.

                1. the actions of the Supreme Court itself has had an expansive (even if unforeseen) impact by super-empowering PHOSITA.

                  WD is subjective. It uses a PHOSITA as the interpreter, but the ultimate question is what the particular inventor had. Sometimes the inventor has more than what he enables to the public, but most times its less. If I disclose a discovery that has 50 uses through a wide range of fields, but I personally only recognize two of them in my particular field, my patent is limited to those 2 and the other 48 revolve to the public. That, along with the limited grant time, are the two reasons patent law has public utility.

                2. I don’t really understand what you’re asking or saying, but if you can’t point to something in your application that establishes, by a preponderance, that the claim is “supported” then the claim is invalid under 112, 1st or 112(a). With the understanding, of course, that your original claims are support for themselves.

                3. No. It’s a question of fact that is resolved by objective evidence.

                  It’s subjective in that is an inquiry into the particular inventor’s mind, as opposed to a reasonable man or PHOSITA objective standard.

                  With the understanding, of course, that your original claims are support for themselves.

                  Wrong. Original claims are not inherently supported. Nor does merely having the same language in the spec that is in your claim inherently support the claim. See MPEP 2163. A claim to a genus requires the support of sufficient species to prove possession of the breadth of the scope.

                  For example, a spec stating “I live in Virginia, which is in the US, which is part of Earth” does not support the written description of a claim to “living on earth” even if that claim language was an original claim. There either needs to be disclosure of a principle as to why living in virginia is the same as living anywhere else, or there needs to be sufficient other species examples of the breadth of the scope (i.e. an australia, europe, and africa species) to warrant possession of the genus.

                4. “It’s subjective in that is an inquiry into the particular inventor’s mind, as opposed to a reasonable man or PHOSITA objective standard.”

                  Wrong. It’s a question of fact resolved by objective evidence. The inventor’s subjective belief is irrelevant to the resolution of the question. See, e.g. MPEP 2163.02.

                  “Wrong. Original claims are not inherently supported. Nor does merely having the same language in the spec that is in your claim inherently support the claim. See MPEP 2163. A claim to a genus requires the support of sufficient species to prove possession of the breadth of the scope.”

                  The presumption is that original claims are supported. The burden is on the examiner to rebut the presumption, as is the ultimate burden to establish lack of written description by a preponderance.

                  “For example, a spec stating ‘I live in Virginia, which is in the US, which is part of Earth’ does not support the written description of a claim to ‘living on earth’ even if that claim language was an original claim. There either needs to be disclosure of a principle as to why living in virginia is the same as living anywhere else, or there needs to be sufficient other species examples of the breadth of the scope (i.e. an australia, europe, and africa species) to warrant possession of the genus.”

                  I have no idea what you are trying to say with this.

              2. 7.1.2.1.2.1.2

                >>that you possessed at the time of filing

                What does that mean? I assume we are judging at the time of filing. I think I understand LizardTech well. And I think I understand claim scope well. I think all of these issues are being muddled by Lemley for his judicial activism agenda.

                Scope of enablement is the right metric. Tell me what would you not possess and yet enable?

                1. Scope of enablement is the right metric. Tell me what would you not possess and yet enable?

                  haha are you really asking this question? The person who invented the bow enabled “a machine that fires a projectile.” Other machines that fire a projectile are a catapault, a gun, a cannon, a rocket launcher and a missile silo. Did the person who invented the bow possess the gun? Does the person who invents the gun only get to practice it when he licenses from the bow manufacturer in your mind?

                  The valid way to claim a bow is by describing the wood and the string. The invalid way is to limit it by the function it performs.

                2. “I think I understand LizardTech well.”

                  With all due respect I don’t think you do. You keep posting “[h]e is entitled to a claim scope that is the extent of enablement (to a person of ordinary skill in the art in light of the specification)” but that’s not what Lizard Tech says. Lizard Tech does a good job explaining the difference between WD and enablement.

                  Another good explanation of the difference(s) between WD and enablement is provided in Amgen, Inc. v. Hoechst Marion Russell, Inc., 314 F.3d 1313 (Fed. Cir. 2003).

                3. Another good explanation of the difference(s) between WD and enablement is provided in Amgen, Inc. v. Hoechst Marion Russell, Inc., 314 F.3d 1313 (Fed. Cir. 2003).

                  Yes. I also like Abbvie v. Janssen Biotech, which was discussed on this blog. That’s a textbook case of the applicant describing a species, using it to claim a broad genus, and then attempting to reach an infringer with a completely different structure just because it fell within the broad genus. Rather than find infringement the court held the claims invalid, because the completely different structure falling under the claim scope (with no proof that patentee considered the structure) showed the granted scope was overbroad.

            2. 7.1.2.1.2.2

              Do you understand that if someone comes up with a solution that inventive that is inside the claim scope that the claims can be invalidated on this basis? That is the challenge with claim scope.

              haha, I think if someone came up with a solution inside the claim scope that would be called “infringement.” If there was a pre-existing solution inside the scope it would be called obvious at least. But your mistake is soon to be clear:

              He is entitled to a claim scope that is the extent of enablement (to a person of ordinary skill in the art in light of the specification). See LazardTech.

              It’s “Lizardtech” and nope. He’s entitled to a scope that meets both enablement and WD, and it’s clear you don’t meet WD for a genus when you only provide a single species. I’ll quote you the example Lizardtech uses since I’m sure you won’t go find it yourself:

              By analogy, suppose that an inventor created a particular fuel-efficient automobile engine and described the engine in such detail in the specification that a person of ordinary skill in the art would be able to build the engine. Although the specification would meet the requirements of section 112 with respect to a claim directed to that particular engine, it would not necessarily support a broad claim to every possible type of fuel-efficient engine, no matter how different in structure or operation from the inventor’s engine. The single embodiment would support such a generic claim only if the specification would “reasonably convey to a person skilled in the art that [the inventor] had possession of the claimed subject matter at the time of filing,”

              You don’t get to be the first person to build a spaceship that goes to the moon and then claim “all spaceships that go to the moon” or “all space travel” or any other ridiculously broad functional limitation you can dream up.

              I just cannot believe that such a foundation of patent law would be questioned by the likes of you.

              I clearly need to get into the private sector. The pay is better and my opposing counsel, “the likes of you”, clearly don’t know what they’re doing.

              1. 7.1.2.1.2.2.1

                “I clearly need to get into the private sector.”

                Nobody’s stopping you. Except probably yourself.

      3. 7.1.3

        Where is the specific analog to anArrhenius equation ? Quantitative analysis is a category of evaluation, it’s not qualitative, but Stats or QBA is a 1 -2 semester class, lot’s of algorithms. If this was handed to a ordinarily or even extraordinarily skilled person, fundamental questions would certainly arise immediately. “What do you want to analyze, what data is available, what do you want to know, what are the criteria, what is sufficient accuracy” The artisan is not an inventor, but an implementor. This is discloses nothing.

        Also at this level of abstraction, despite denial of such, this stuff does already exist. Think of forgotten password hint routines or other online verification strategies, and maybe even classic TV’sWhats my Line games .

  13. 6

    He did the right thing by closing with “lack of preemption”

    this key point, which is right there in black and white in the opinion as the backbone of the exception, seems to be lost on 95% of the Alice-citing, 101 cheerleading crowd

    Good for them

  14. 5

    the applicant essentially argued that the USPTO had failed to provide evidence that the idea of data collection and analysis was an abstract idea and failed to provide evidence that the computer-implemented limitations failed to provide sufficient practical grounding in order to avoid the eligibility ax.

    hahaha. The office will gladly take money in exchange for worthless grants, apparently. What does he think is going to happen? The first time someone infringes the response is going to be “here’s the evidence.” And that evidence will be dropping an 8th grade science textbook on the table.

    data collection and analysis was an abstract idea

    I’m not sure you could have a “fundamental building block of science that must remain free to all” if data collection and analysis didn’t qualify for it.

    the computer-implemented limitations failed to provide sufficient practical grounding

    Alice.

    This is a great example of how the office employing non-lawyers makes a bunch of work for everyone else. The majority of the argument is “you found these limitations novel and non-obvious” as if a 102/103 rejection was necessary for a 101 rejection. That being said, neither italicizing nor bolding evidence can make the common sense of a lay person outside the reach of a PHOSITA.

  15. 4

    Please list the other applications that have now been allowed. (Otherwise I will have to go through all the data from the Public Knowledge article.)

  16. 3

    The reality is that there are holes big enough to drive a truck through in Alice. Too bad the court didn’t listen to Newman. Newman should give a lecture to the oh so awesome 9.

  17. 1

    He actually argued quite a bit else other than “no evidence”. But still, his arguments were probably all preposterous, I don’t have time for a detailed review of the claims though myself. At the same time though, it does sound like the examiner didn’t lay the case out very well.

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